The Complainant is Instagram, LLC, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Wu Hai Tao (吴海涛), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2020. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. On the same day, the Center sent an email communication to the Complainant, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on August 10, 2020. On August 6, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On August 6, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. On August 7, 2020, the Respondent offered to give the disputed domain name to the Complainant for free in an email communication. On the same day, the Center sent a communication to the Parties regarding possible settlement. On August 10, 2020, the Complainant requested that the Center proceed with this administrative proceeding as the Respondent was given the chance to settle prior to the filing of the Complaint but failed to do so. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on August 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2020. On August 14, 2020, the Respondent sent an informal communication to the Complainant, which the Complainant forwarded to the Center. No substantive Response was filed with the Center. On September 3, 2020, the Center informed the Parties that it would proceed to appoint the Panel. The Center appointed Matthew Kennedy as the sole panelist in this matter on September 15, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant provides the Instagram online photo and video sharing social networking application. Instagram currently has over one billion monthly active users. Instagram is inaccessible in mainland China but has appeared in Chinese press articles; Chinese blogs and online forums also diffuse information about Instagram. The Complainant has obtained multiple trademark registrations for INSTAGRAM, including International trademark registration number 1129314, registered on March 15, 2012, specifying goods and services in classes 9 and 42; and Chinese trademark application number 10614690, registered on June 14, 2013, specifying services in class 42. Those trademark registrations remain current. The Instagram platform has a new video-music feature named “Reels”. The Respondent is an individual. According to evidence provided by the Complainant, the Respondent’s contact email address is associated with other domain names, including several containing well-known third party trademarks. The evidence submitted by the Complainant shows that on November 12, 2019 two online publications, TechCrunch and Variety, reported that Instagram was launching or testing its “Reels” video-music feature in Brazil. This news was also reported elsewhere online that same day, in Business Insider France. The disputed domain name was registered on November 13, 2019. It is passively held and resolves to an error page. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s INSTAGRAM trademark. The disputed domain name incorporates the INSTAGRAM trademark in its entirety. The Complainant’s trademark is clearly recognizable as the leading element of the disputed domain name. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee of the Complainant, nor has he been otherwise authorised or allowed by the Complainant to make any use of its INSTAGRAM trademark, in a domain name or otherwise. The disputed domain name has been subject to dynamic redirection, resolving to a range of websites, including a website displaying purported Windows security notifications, and it is currently passively held. The Respondent is not commonly known as the disputed domain name. The disputed domain name was registered and is being used in bad faith. The Complainant's INSTAGRAM trademark is inherently distinctive and well known throughout the world. The results of a search for “Instagram” in the Baidu search engine exclusively refer to the Complainant and its business. The disputed domain name was registered one day after the launch of Instagram Reels. The Respondent has engaged in a pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy by registering not only the disputed domain name but also other domain names targeting well-known third party trademarks. The Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website, in accordance with paragraph 4(b)(iv) of the Policy. B. Respondent The Respondent’s informal email communication noted that the Complainant’s product is banned in China and questioned its popularity in that country. The Respondent reserved his right to take this matter to a court. 6. Discussion and Findings 6.1. Procedural Issues A. Language of the Proceeding Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese. The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name previously redirected to dynamic websites in English, which suggests that the Respondent understands the English language; the disputed domain name consists of Latin characters, such as the English term “reels”; and translation and submission of the Complaint in Chinese would result in additional expenses and unnecessary delay for the Complainant. Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293. The Panel observes that in this proceeding the Complaint and amended Complaint were filed in English. Despite having received an email from the Center regarding the language of the proceeding in Chinese and English, the Respondent made no language request in his informal communication. The Respondent has not expressed any interest in participating otherwise in this proceeding. Delivery of the written notice of the amended Complaint was refused at the Respondent’s address. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay, whereas accepting the informal communication in Chinese will not cause unfairness to either Party. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English, but that the Panel will accept all documents as filed in their original language, whether English or Chinese, without translation. B. Lack of Court Proceeding The Respondent advised in his informal communication that he reserved the right to initiate a court proceeding regarding this dispute. For the record, the Panel notes that the Respondent has not notified the Panel of any legal proceedings initiated prior to, or during, this administrative proceeding in accordance with paragraph 18(b) of the Rules. 6.2 Substantive Issues Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Complainant has rights in the INSTAGRAM mark. The disputed domain name wholly incorporates the INSTAGRAM mark. The disputed domain name adds the dictionary word “reels” but this element is not capable of dispelling confusing similarity between a domain name and a trademark for the purposes of the first element of the Policy. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110. The trademark remains clearly recognizable within the disputed domain name. The disputed domain name also includes the generic Top-Level Domain (“gTLD”) “.com”, which is a technical requirement of domain name registration. A gTLD is normally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy, except in the rare circumstance where it has some impact beyond its technical function, which is not the case here. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Complainant submits that the Respondent is not a licensee of the Complainant, nor has he been otherwise authorised or allowed by the Complainant to make any use of its INSTAGRAM trademark, in a domain name or otherwise. As regards the first circumstance set out above, the disputed domain name resolves to an error page. Accordingly, the Panel does not consider the Respondent’s use of the disputed domain name to be in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use of the disputed domain name within the circumstances of paragraph 4(c)(iii) of the Policy. As regards the second circumstance set out above, the Respondent’s name is listed in the Registrar’s WhoIs database as Wu Hai Tao (吴海涛), not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by paragraph 4(c)(ii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not allege that he had any rights or legitimate interests in respect of the disputed domain name. Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive. With respect to registration, the disputed domain name was registered in 2019, years after the registration of the Complainant’s INSTAGRAM trademark, including in China where the Respondent is resident. INSTAGRAM is a coined word with no meaning other than as a reference to the Complainant and its trademark. The disputed domain name wholly incorporates the INSTAGRAM trademark as its initial element. The Complainant has a considerable reputation in its INSTAGRAM mark, even in mainland China, as evidenced by the fact that all the search results for “Instagram” in the Baidu search engine refer to the Complainant. Although the Respondent questions the popularity of the Complainant in China, he offers no alternative explanation as to why he chose to register the Complainant’s trademark in the disputed domain name. Further, the disputed domain name includes the word “reels” and was registered the day after it was reported online that the Complainant was launching or testing a product feature of that same name. The Panel considers the possibility that this was a coincidence to be remote. Rather, the Panel considers it highly likely that the Respondent knew of the Complainant’s mark at the time he registered the disputed domain name. With respect to use, the Respondent currently makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the present dispute, the disputed domain name wholly incorporates the INSTAGRAM trademark, together with the name of the Complainant’s product feature “Reels”, plus a gTLD. The Complainant has acquired a considerable reputation in its INSTAGRAM mark, even in mainland China. The Respondent has registered other domain names that, like the disputed domain name, wholly incorporate third party brand names. The Respondent provides no explanation of any potential use of the disputed domain name. In all these circumstances, the Panel considers it more likely than not that the Respondent is using the disputed domain name in bad faith. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Matthew Kennedy
Sole Panelist
Date: September 25, 2020
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